The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, internally-represented.
The Respondent is PrivacyP, Domain Admin of Nobby Beach, Queensland, Australia/ Edwin Ilminovic, N/A of Kaunas, Lithuania. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with DomainContext, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 28, 2013. On May 28, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 3, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 3, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on June 4, 2013.
The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 4, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was June 24, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 3, 2013.
The Center appointed Gabriela Paiva Hantke as the sole panelist in this matter on August 12, 2013. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
The Complainant and its affiliated companies are one of the world’s leading research-focused healthcare groups in the fields of pharmaceuticals and diagnostics and the Complainant is the trademark owner of VALIUM, protected as trademark in a multitude of countries worldwide. As an example the Complainant has provided a copy of the trademark certificate for International Registration No. R250784, (Annex 3 to the Complaint). The mark VALIUM designates a sedative and anxiolytic drug belonging to the benzodiazepine family, which enabled the Complainant to build a world-wide reputation in psychotropic medications. The aforementioned trademark has been registered by the Complainant for many years, and the priority date for the mark is October 20, 1961.
The Domain Name incorporates entirely the trademark VALIUM of the Complainant and the only difference is the letter “s” added to the Domain Name.
The Domain Name was registered on May 21, 2013. 5. Parties’ Contentions A. Complainant
The Complainant is requesting the Domain Name to be transferred in view of the Complainant’s rights in the trademark VALIUM. The Complainant is the owner of the trademark and has multiple registrations over the world. As Annex 3 to the Complaint, the Complainant has provided a copy of the VALIUM trademark International Registration No. R250784, October 20, 1961.
The Complainant has provided the relevant submissions regarding the three elements of the Policy. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Domain Name includes the trademark VALIUM of the Complainant and the only difference is the letter “s” added at the end, which does not sufficiently distinguish the Domain Name from the trademark.
Under these circumstances, it is evident to the Panel that the Domain Name is confusingly similar to the Complainant’s trademark VALIUM because the letter “s” added at the end of the Domain Name only produce the impression of been a plural form of the well- known VALIUM mark. This means that the consumer will be confused and will identify the Domain Name as owned or related to the Complainant.
In summary the Panel finds that the Domain Name is confusingly similar to the mark owned by the Complainant, so the Complainant has therefore satisfied the first element of the Policy. B. Rights or Legitimate Interests
The Complainant has shown ownership of the VALIUM trademark and world recognition of its products according to copies of the newspaper articles provided by the Complainant, where also is proven that it core business is pharmaceutical and health research. The Respondent did not show any rights or legitimate interests and from the evidence filed by the Complainant and the use that the Respondent is making of the web site under the Domain Name it is obvious that the Respondent did have knowledge of the existence of the well-know trademark VALIUM of the Complainant.
In view of the above, the Panel finds that the Respondent does not have any rights or legitimate interests in the Domain Name, and that the Complainant has therefore satisfied the second element of the Policy. C. Registered and Used in Bad Faith
The Complainant has provided screen prints of the web site at the Domain Name, where there is commercial activity in the area of pharmaceutical products, which is the core business for which the Complainant has and uses the mark VALIUM. The website at the Domain Name offers generic products, naming Valium for sale and creates a false impression of an affiliation with or endorsement by the Complainant. On the other hand the Respondent has not filed or provided any evidence of rights or legitimate interests in the Domain Name.
Under these facts the Panel concludes that the Respondent has registered the Domain Name in bad faith, and is acting to attract Internet users to its web site by creating a likelihood of confusion with the Complainant’s mark.
The Panel finds therefore that the Complainant satisfied the third element of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Gabriela Paiva Hantke
Sole Panelist
Date: August 22, 2013
Full & Egal Universal Law Academy